United States District Court, E.D. Michigan, Southern Division
Mark Kassa, Plaintiff: Scott S. Yaldo, Yaldo Law, PLLC,
Detroit Metro Convention & Visitors Bureau, Detroit Sports
Commission, Defendants: C. David Bargamian, Josh J. Moss,
Michael K. Steinberger, Todd R. Mendel, Barris, Sott,
AND ORDER GRANTING DEFENDANTS' MOTION TO DISMISS (ECF
MATTHEW F. LEITMAN, UNITED STATES DISTRICT JUDGE.
Mark Kassa (" Kassa" ) holds several trademarks
with respect to the phrases " The D" and "
Welcome to the D" (the " Marks" ). In this
action, Kassa claims that Defendants Detroit Metro Convention
& Visitors Bureau and Detroit Sports Commission (collectively
" Defendants" ) infringed the Marks when they
included the phrase " Welcome to the D" on banners
and signs that they displayed promoting two sporting events
in the City of Detroit. Defendants deny that their banners
and signs infringed the Marks. The Court agrees. Accordingly,
for the reasons stated in this Opinion and Order,
Defendants' Motion to Dismiss (ECF #9) is GRANTED.
Kassa's Registration and Use of the
is a " musician and entrepreneur" who hosts an
online talk show, the " Welcome to the D Show."
(First Am. Compl., ECF #12 at ¶ 7.) Kassa also "
operates an online apparel and accessories store  that
sells various products related to Detroit and music." (
Id. ) These products include items promoting
Kassa's band and his talk show. ( See id. )
connection with these commercial ventures, Kassa owns
for the phrases " Welcome to the D" and " The
Specifically, [Kassa] is the owner of three trademarks for
the mark " Welcome to the D" for (i) "
clothing, namely, shirts and hats" (United States
Registration No. 3,724,089), (ii) " entertainment
services in the nature of live musical performances"
(United States Registration No. 4,117,605), and (iii) "
entertainment in the nature of an on-going special variety,
news, music or comedy show featuring entertainment news and
content broadcast over television, satellite, audio, and
video media; entertainment, namely, a continuing music and
entertainment news show broadcast over television, satellite,
audio, and video media; entertainment, namely, a continuing
music and entertainment news show broadcast over television,
satellite and internet mediums" (United States
Registration No. 4,376,110).
Additionally, [Kassa] is the owner of two trademarks for the
mark " The D" for i) " clothing, namely,
shirts and hats" (United States Registration No.
4,316,115) and (ii) " entertainment services in the
nature of live musical performances" (United States
Registration No. 4,333,876).
( Id. ) Kassa has " allocated considerable
resources and has dedicated significant effort in promoting
and developing" the Marks. ( Id. at ¶ 10.)
Kassa has further " continually used the 'Welcome to
the D' mark in connection with the promotion,
advertising, and sale of entertainment services and related
apparel and accessories." ( Id. at ¶ 9.)
also operates a website found at the following internet
address: http:/welcometothed.com . Kassa's website --
which is referenced in his First Amended Complaint (
see ECF 15 at ¶ 7, Pg. ID 163) -- confirms that
" the D" is a shorthand reference or nickname for
the City of Detroit. For instance, Kassa tells visitors to
his site that his family has been part of the " fabric
of Detroit since 1929" and that during his musical
career he has been " proud to represent 'the
D.'" ( See
http://welcometothed.com/about/.) Kassa further encourages
those buying apparel bearing the Marks to " wear these
items with pride because you are representing one of the
greatest cities in America!" ( See id. )
Defendants Use of the Phrase " Welcome to the
2012, the Detroit Tigers and San Francisco Giants played in
Major League Baseball's World Series. The Tigers hosted
two games at their home stadium, Comerica Park, which is
located in the City of Detroit. In 2015, the City of Detroit
hosted another prominent sports event, the USA Volleyball
Open National Championships. (First Am. Compl. at ¶ 12.)
In connection with both the Word Series and the Volleyball
Championships, " Defendants put up various signs and
banners around the City of Detroit" that included the
phrase " Welcome to the D." ( Id. ) These
" signs and banner[s] were particularly noticeable on
street lampposts and the lobbies of hotels and other
businesses." ( Id. )
attached examples of these signs and banners to his
pleadings. ( See ECF #15 at 8-12, Pg. ID 193-197.)
The banners for both the World Series and the Volleyball
Championships are similar. As depicted below, the phrase
" Welcome to the D" appears at the top of the
banner; the logo of the sports event and/or promoter of the
event appears in the middle of the banner; the phrase "
Where Champions Are Made And Championships Are Played"
appears below the sponsors' logos; and Defendants'
logos appear at the bottom.
(ECF #1-1 at 9, Pg. ID ...